As a trademark owner, it is important that you maintain your trademark registration.
To do so, you will have to carry out various actions that must meet local requirements. Failing to comply with these can lead to cancellation, revocation or expiry of the mark, and the consequent loss of your rights.
Here is a checklist to help you maintain your trademark registration:
- Pay renewal fees
- Publish a cautionary notice
- Submit evidence of use
- Use your trademark
Pay renewal fees
In most countries, the protection of a trademark is granted for an initial period of 10 years. It can then last indefinitely, subject to renewal every 10 years. If the mark’s owner fails to submit the renewal application on time, the registration will be considered as abandoned. Some countries such as Singapore or Thailand allow a grace period during which renewal applications are accepted. This extends to a duration of six months after the renewal deadline and is subject to the payment of additional official fees.
If the registration has expired, there is no way to revive your mark or marks. Then, obtaining new protection would mean starting from scratch with a new trademark application. This can be a hassle. It can be expensive and can put your mark and your business at risk. It is therefore critical to maintain your trademark registration. Make sure to keep your trademark’s renewal deadline in mind.
Publish a cautionary notice
In Myanmar, it is recommended that you publish cautionary notices in the newspapers, further to the submission of a renewal declaration with the registry. In a cautionary notice, trademark owners state that they are the proprietors of their trademarks. They also state that no other business or individual may use marks which are similar or identical to theirs.
The law does not enact an exact renewal deadline but it is recommended to proceed with the publication every 2 to 3 years as widely accepted by local practice.
Submit evidence of use
In some countries like the Philippines, trademark owners are required to submit evidence of use on a regular basis upon filing, registration, and renewal of their marks. Failing this, the marks’ registrations will lose their rights and the marks will be removed from the registry. This requirement helps in filtering trademark owners who file trademarks without the genuine intention of using them, or using them in bad faith.
Use your trademark
Even if there is no obligation to submit evidence of use, trademark owners are encouraged to use their marks properly and continuously upon registration. Indeed, if a registered trademark has not been used consecutively for a period of three or five years – depending on the country, there is a risk for the trademark to be removed from the register. This is because any interested party can request to have an inactive registered trademark removed by showing proof of non-use. It is therefore important that your marks are used, and that they are used as originally filed and consistently (same words and logo) to maintain their strength.
Once your trademark registrations have been successfully granted, you should begin displaying your marks with the registered trademark symbol ® on your website, on packaging or labelling, marketing and advertising documents. This symbol lets third parties know that your marks have been registered.
If you need any help to maintain your trademark registration in Asia, or require solutions for your trademark and design rights in Asia, please get in touch. We would be glad to help.
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